In an ongoing patent dispute between manufacturers of armored fiber optic cables, Judge Choudhury (E.D.N.Y.) recently resolved competing motions to dismiss on several grounds. In doing so, she ruled that Defendant Point 2 Point Communications Corporation (“P2P”) lacked Article III standing to bring a “correction of patent inventorship” counterclaim against Plaintiff Certicable LLC to add P2P’s CEO, Roman Krawczyk, as an inventor to the patent at issue. See Certicable LLC v. Point 2 Point Comms. Corp., No. 2:23-cv-05322 (NJC) (SIL), 2024 WL 3718917, at *16 (E.D.N.Y. Aug. 7, 2024).

After Certicable sued P2P for infringement of U.S. Patent No. 10,444,454 (the “’454 patent”), P2P brought a “correction of inventorship” counterclaim against Certicable under 35 U.S.C. § 256, seeking to add Krawczyk as an inventor to the ’454 patent. Id. at *13. P2P alleged that Krawczyk, who previously worked at Certicable, contributed to the claimed subject matter in the ‘454 patent. Id. at *5.

However, Judge Choudhury held that P2P lacked standing to assert the counterclaim because it did not have a “concrete financial interest” in the ’454 patent. Id. at *16. That lack of interest stemmed from a 2017 assignment from Krawczyk to Certicable. Analyzing the language of the 2017 assignment, Judge Choudhury concluded that the assignment transferred to Certicable any rights that Krawczyk had to inventions disclosed by an earlier patent application, the ‘605 application. Id. Judge Choudhury also found that the ‘605 application disclosed the subject matter claimed in the ’454 patent: “non-interlocking armor being formed from a spiral tube” and an “outer jacket with an inside diameter slightly greater than the outside diameter of the non-interlocking armor.” Id. at *15–16. Accordingly, neither Krawczyk nor P2P had a “concrete financial interest” in the ‘454 patent and P2P lacked standing to bring a “correction of inventorship” counterclaim. Id. at *16.